Opinion
No. 156.
January 14, 1929.
Appeal from the District Court of the United States for the Southern District of New York.
Patent infringement suit by Max Rachlin and others against Julius Watsky and another, doing business under the name and style of Hillcrest Roofing Tinsmithing Supply Company. From a decree holding valid, but not infringed, claim 1 of United States patent, No. 1,434,211, for gutter hangers issued to Woolf Peirez on October 31, 1922, plaintiffs appeal. Reversed and remanded, with directions.
The plaintiffs Rachlin and Gold are joint owners, by virtue of assignments, of the Peirez patent. The plaintiff corporation, Rockland Sheet Metal Works, Inc., is the sole licensee under said patent. The defendants are engaged in erecting gutters and in selling roofing supplies within the Southern district of New York. In such business they have used and sold gutter hangers which are alleged to infringe the Peirez patent.
The Peirez invention relates to the construction of a gutter hanger made of sheet metal. In the exhibits presented it is made of copper. The ordinary roof gutter has one edge rolled into a bead and one plain edge, the latter being the edge adjacent to the wall of the building when the gutter is erected for use. The hanger of the patent consists of a stiffened bar, which extends across the gutter; the outer end of the bar being hook-shaped and fitting over the bead of the gutter, while the inner end is bent over the plain edge of the gutter; riveted to the hooked end of the bar is a metal strap, which can be bent to embrace the under surface of the gutter; one end of this strap projects like a tongue into the bead of the gutter, while the other end is carried through a slot in the bent-over portion of the inner end of the bar, and is then bent downward and into contact with the wall of the building, to which it may be nailed. To the top of the bar is riveted a bracket strip which is bent upwardly from the bar and inwardly toward the roof, to which it is nailed. The alleged infringing device, known as the Lupton hanger, is identical with that of the plaintiffs', except that in the Lupton hanger the transverse bar and the gutter-embracing strap, with its projecting tongue, are struck out from a single strip of metal, instead of being united by a rivet, as in plaintiffs'.
L.H. Klugherz, of New York City (Henry J. Lucke, of New York City, of counsel), for appellants.
Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
If the patent in suit is valid, we entertain no doubt that the hanger sold by defendants is an infringement. Claim 1, the only claim in issue, reads as follows:
"1. A gutter hanger comprising a bar extending transversely of the gutter and provided at its outer end with a hook-shaped section fitting over the bead of the gutter, the opposite end of said bar being fixedly attached to the opposite edge of the gutter, a strap member engageable with the ends of the transversely extending bar and tightly embracing the under surface of the gutter, said strap member having an extension at its outer end adapted for insertion within the beaded edge of the gutter to effectively lock the hook-shaped section in position."
Every element thus claimed is concededly present in defendants' hanger and functions in precisely the same way. Mr. Watsky so admitted on the stand. The attempt to differentiate because defendants' device is made by striking it from a single piece of metal, while plaintiffs' bar and strap are united by a rivet, cannot succeed, for reasons too recently stated by this court to need repetition. See Gibbs v. Triumph Trap Co. (C.C.A.) 26 F.2d 312, 314; Lamson Co. v. G. G. Atlas Systems (C.C.A.) 14 F.2d 22, 23. There is nothing in the claim which requires the engagement between the bar and the strap to be effected by a rivet. In the specifications it is stated that "to the hook-shaped end of the said bar is fixed, for instance, by means of a rivet, the gutter-embracing strap." An engagement effected by making the bar and the strip integral is within the language of the claim.
When Peirez entered the field, the art was already crowded. Nineteen prior patents were cited by the defendants, 10 of which appear to have been considered by the Examiner while the application of Peirez was in the Patent Office. It is unnecessary to describe these prior patents. It suffices to say that all that Peirez added to the prior art was the idea of so fastening together the hook-shaped end of the bar and the gutter-embracing strap that the outer end of the latter should project as a tongue into the bead of the gutter, and thus lock the hook-shaped section in position over the bead of the gutter.
To the lay mind this seems like a very slight advance, hardly worthy of being called invention. Nevertheless, none of the prior patents show this precise element, and it was an improvement over anything which had before been done. Defendant Watsky testified that he found the tongue in plaintiffs' structure very useful; that the gutter was held much better than it would be if the tongue were omitted. In a crowded art, patentable novelty has often been found in slight improvements upon existing structures. Miehle Printing Press Mfg. Co. v. Whitlock, etc., Co., 223 F. 647, 650 (C.C.A. 2); A. Kimball Co. v. Noesting Pin Tricket Co., 262 F. 148 (C.C.A. 2). Moreover, the patent has had commercial success. Rachlin testified that between 2,500,000 and 3,000,000 of plaintiffs' hangers have been sold. The manufacturer of the infringing Lupton device has paid the tribute of imitation. The Lupton device is manufactured under a later patent, No. 1,528,996, issued to Steckler, which claims:
"3. In a gutter hanger, a gutter strap adapted to extend beneath the gutter and at one end to embrace the bead thereof, and a tongue stamped from said strap near the said end and adapted to interlock with the said bead."
In the light of all this, we cannot say that defendants have overcome the presumption of validity which arises from the issuance of the plaintiffs' patent. Lehnbeuter v. Holthaus, 105 U.S. 94, 26 L. Ed. 939; Walker, Patents (5th Ed.) § 491.
The decree is reversed, and the cause remanded, with directions to enter a decree for the plaintiffs.